Can a public domain artwork be registered as a trade mark or would that be contrary to public policy and morality?

When can an artwork be
registered as a trade mark? The question is not an easy one, and may be
complicated further by consideration that the artwork at hand may be no longer
eligible for copyright protection due to the expiry of the term of protection.
This means that the question may turn out to be not just one relating to the
requirements for trade mark registration, but also involve broader, public
interest considerations that relate to the opportunity to continue protecting
by means of other IP regimes items (works) in relation to which the primary IP right
(in this case, copyright) is no longer available.

On consideration that a
number of artworks by Norwegian artists [notably Gustav Vigeland] would soon enter the public domain under the Norwegian Copyright Act, the Oslo Municipality
(which manages several of these copyrights) is seeking to register a number of
artworks as trade marks.

The Norwegian
Industrial Property Office (NIPO) rejected some applications tout
court, holding that the signs at issue lacked distinctive character or
consistedofashapethataddssubstantialvaluetothe
goods [Article 3(1)(b)-(c)-(e) of
the Trade Mark Directive], while in
respect of other applications registration was granted for certain types of
goods andservices.

The Oslo Municipality
appealed the decisions to the Board of Appeal, which - in addition to the
grounds consideredby NIPO
– wondered whether registration should be also refused
on grounds of public policy and morality[Article 3(1)(f) of the Trade Mark Directive]. More specifically, the Board of Appeal was unsure whether trade
mark registration of public domain works might, under certain circumstances [notably when the artwork in question is well-known and has
significant cultural value], be against
“public policy or accepted principles of morality” and thus fall within the
absolute ground for refusal within Article 3(1)(f) of the Trade Mark Directive.

The Board of Appeal decided
to seek guidance on this point (as well as interpretation of Articles
3(1)(e)(iii), 3(1)(c), and 3(1)(b) of the Trade Mark Directive) from the
EFTA Court. In my view the most
interesting part of the judgment is indeed the one concerning refusal of
registration on public policy/morality grounds.

Norwegian sculptor Gustav Vigeland

The role of the public
domain in copyright

In addressing this issue,
the Court noted at the outset that copyright and trade mark law pursue
different aims and, in principle, nothing prevents both rights from subsisting
simultaneously [para 62].

With specific regard to
copyright, the rationale of having a limited duration is to serve the
principles of legal certainty and protection of legitimate expectations, but is
also functional - to some extent – to fulfilling the general interest in
protecting creations of the mind from commercial greedand ensuring the freedom of thearts [para
65].

More specifically,

“The
public domain entails the absence of individual protection for, or exclusive
rights to, a work. Once communicated, creative content belongs, as a matter of
principle, to the public domain. In other words, the fact that works are part
of the public domain is not a consequence of the lapse of copyright protection.
Rather, protection is the exception to the rule that creative content becomes
part of the public domain oncecommunicated.” [para 66]

Trade mark protection

Turning to trade mark law,
the EFTA Court observed that trade mark protection intends to ensure market
transparency and assumes an essential role in a system of undistortedcompetition [para 67]. It is to fulfill these
functions that trade mark protection is potentially indefinite [para 68].

Having said so, however,
because of “the potentially everlasting exclusivity afforded to the proprietor
of a trade mark, there are several conditions that must be fulfilled in order
for the trade mark to be registered” [para 69].

Trade marks for out-of-copyright
works

Turning to consideration of
the specific case at issue, the Court found that a trade mark based entirely on
copyright-protected work presents “a certain risk of monopolisation of the sign
for a specific purpose, as it grants the mark’s proprietor such exclusivity and
permanence of exploitation which not even the author of the work or his estate
enjoyed” [para 70, also referring to
paragraph 52 in the 2003 Opinion of Advocate General (AG) Ruiz-Járabo Colomer in Shield
Mark].

Hence (in principle),

“The
interest in safeguarding the public domain … speaks in favour of the absence of
individual protection for, or exclusive rights to, the artwork on which the
mark isbased.” [para 72]

One of the artworks that Oslo municipality is trying to have registered as a trade mark:The Angry Boy (Sinnataggen)

The rationale of the
various absolute grounds for refusal of registration

According to the Court this
also follows from consideration of how Article 3(1)(b) to (e) of the Trade Mark
Directive acknowledges the need to keep a sign available for general use [para 73, referring to paragraphs 33 ff in the 2008 Opinion of AG Ruiz-Járabo Colomer in Adidas]. Having said so, it is possible that distinctive character
is acquired through use, thus paving the way to registration of a sign that ab
initio would have not been otherwise eligible for protection as a
trade mark. Thus, the grounds for refusal sub Article 3(1)(b)-(d) do not ensure
that a certain sign is generally kept free for use over time.

Turning to Article 3(1)(f) of the Trade Mark Directive, the EFTA
Court noted that the absolute ground therein is somewhat more ‘absolute’ than
Article 3(1)(e) in that it does not require consideration of the classes of
goods and services for which registration is sought [paras 81-82].

The Court then observed that Article 3(1)(f) refers to public
policy and morality: while in certain cases these two limbs
may overlap [para 85], these concepts are not synonyms:

“refusal
based on grounds of “public policy” must be based on an assessment of objective
criteria whereas an objection to a trade mark based on “accepted principles of
morality” concerns an assessment of subjectivevalues.” [para 86]

In the present case, both
public interest and morality could be at stake.

(i) Contrary to “accepted
principles of morality”

Although the signs for
which registration is sought by the Oslo Municipality would not be “offending
by their nature a reasonable consumer with average sensitivity and tolerancethresholds” [para 91], trade mark registration
of artworks that are considered part of a certain nation’s cultural heritage
and values might be perceived by the average consumer as
offensive, and therefore be contrary to accepted principles ofmorality [para 92].

(ii) Contrary to “public
policy”

According to the EFTA
Court, “the notion of “public policy” refers to principles and standards
regarded to be of a fundamental concern to the State and the whole ofsociety.” [para 94] As the
understanding of ‘public policy’ may vary from country to country and change
over time, refusal of registration on this ground can only occur in exceptional circumstances. More
specifically,

“An
artwork may be refused registration, for example, under the circumstances that
its registration is regarded as a genuine and serious threat to certain
fundamental values or where the need to safeguard the public domain,itself,isconsideredafundamentalinterestofsociety.” [para 96]

Having provided a series of
examples, the EFTA Court concluded that:

“registration
of a sign may only be refused on basis of the public policy exception provided
for in Article 3(1)(f) of the Trade Mark Directive if the sign consists
exclusively of a work pertaining to the public domain and the registration of
this sign constitutes a genuine and sufficiently serious threat to a
fundamental interest ofsociety.”

When
discussing absolute grounds for refusal of trade mark registration in the
context of overlapping IP rights, it is often recalled that in his Opinion in Philips AG
Ruiz-Jarabo Colomer observed that [paragraph
30] a trade mark cannot
serve to extend the life of other rights which the legislature has sought to
make subject to limited periods.

While
this statement specifically referred to patents and designs, in my view one
should be careful not to vest it with a peremptory character that it does not
really have, especially as far as: (1) copyright and trade mark protection are
concerned; and (2) in relation to the absolute ground for refusal within
Article 3(1)(f) of the Trade Mark Directive. In this sense, the EFTA Court was
correct in stressing the exceptional character of this absolute ground for
refusal of registration.

In holding that
registration as a trade mark of public domain workisnotper se contrary to public
policy or accepted principles of morality, the EFTA Court achieved what seems
to be a sensible conclusion. This is particular so with regard to the
emphasis that the Court placed on the need to consider thestatusorperceptionoftheartwork at issue in the country where registration is sought. In
this sense, “the riskofmisappropriationordesecration
of a work” may be a relevant consideration in certain, specific instances.

Can a public domain artwork be registered as a trade mark or would that be contrary to public policy and morality?
Reviewed by Eleonora Rosati
on
Saturday, April 08, 2017
Rating: 5

By reading the judgment and from an EU perspective, it would appear that a case like this would not fall under the absolute ground for refusal based on public policy/morality. I guess the argument might be more one of distinctiveness or lack thereof.